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Posted by on in The Company

 

 

Although our WIPO trained IP officer and our legal advisers make reasonable care insuring that we DO NOT violate any registered trademarks, we want to acknowledge that we cannot search every possible trademark office to ensure non violations. We typically search the USPO, UDRP, IPOWIPO, CIPO to ensure that domains we are registering aren't disputed or violate I can URDP rules.

 

Given the amount of web properties we develop and the amount of investors we hold for such purposes, we encourage you to communicate with us should you have concerns or issues with one of our domain names. But before you contact us, ensure that you have consulted a trademark lawyer to sure that your trademarks have been violated. Just because you own rights to the trademark "Bicycletools.com" does not mean you have rights to bicycletools.in or .co or .nyc. Why? Because "bicycle" and "tools" are common dictionary words. And just because you own rights to "physics.com" does not mean you own rights to physics.to, "physics.it" again because of the same reason.

 

Again just because you own a trademark for a certain word does not entitle you to monopoly use unless of course you invented the word and trademarked it.

 

Given the resources it takes for one to win a domain dispute case, we believe you should be informed about your options. Avoiding wasting yours and our time is of great interest to us. We hope you also value your credibility and integrity; therefore, do not start a dispute for the case of domain reverse hijacking.

 

 

Herein we have added a few decisions to help understand what you need to successfully dispute our rights in a domain. as articulated here:

 

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.

 

Here is a few resources for your http://www.icann.org/en/help/dndr/udrp/policy

Reverse domain highjacking http://en.wikipedia.org/wiki/Reverse_domain_hijacking

 

 

Sample decesions:

 

 

 

 

 

 

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NATIONAL ARBITRATION FORUM

DECISION

David H. Pratt d/b/a Solar Mart v. Mushka

Claim Number: FA1202001429169

PARTIES

Complainant is David H. Pratt d/b/a Solar Mart (“Complainant”), Massachusetts, USA.  Respondent is Mushka (“Respondent”), represented by Jenny Schneider, Florida, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

            The domain name at issue is <solarmart.com>, registered with Dynadot.

PANEL

            The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

            Fernando Triana, Esq. as Panelist.

PROCEDURAL HISTORY

            Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2012; the National Arbitration Forum received payment on February 12, 2012.

            On February 16, 2012, Dynadot confirmed by e-mail to the National Arbitration Forum that the <solarmart.com> domain name is registered with Dynadot and that Respondent is the current registrant of the name.  Dynadot has verified that Respondent is bound by the Dynadot registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to This email address is being protected from spambots. You need JavaScript enabled to view it..">This email address is being protected from spambots. You need JavaScript enabled to view it..  Also on February 17, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on March 7, 2012.

Complainant’s Additional Submission was received on March 11, 2012 and in compliance with Supplemental Rule 7.

            On March 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.

            Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

            Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

The Complaint is based on the Complainant’s use and ownership of the mark SOLAR MART in the United States of America since March 30, 2005, to identify online journals (blogs) relating to solar resources and projects.

Complainant’s main contentions are as follows:

1.            Complainant owns the domain name <solarmart.net>, which reverts to the Solar Mart blog. This blog is part of a business plan “to develop an increasing web presence” and it will “evolve into a solar products vendor website”.

2.            Respondent acquired the disputed domain name <solarmart.com> on or approximately on November 1, 2007.

3.            The domain name <solarmart.com> includes the Complainant’s registered mark SOLAR MART in its entirety, thus they are identical “in sound, appearance and connotation”.

4.            Respondent lacks of rights or legitimate interests in respect of the domain name <solarmart.com> since i) Respondent is a domain name development and marketing company, which is not a bona fide offering of goods or services, ii) Respondent’s solarmart.com website is designed to generate advertising revenue, causing consumer confusion by cyber squatting, and iii) Respondent does not have and has not ever had a company known by the Solar Mart name.

5.            Respondent acquired the domain name <solarmart.com> when Complainant’s mark was clearly visible on the first page of all search engines’ results.

6.            Respondent used the false name “Mushka” to register the disputed domain name, yet “Mushka” is not a registered business name in the State of Florida, USA, and is not a publicly listed entity, business or person.

7.            Complainant sent a first cease and desist letter to Respondent on October 21, 2008. Complainant received a response on November 6, 2008 from Respondent, who identified himself as “S. Schneider, Mushka LLC”. In this response, Respondent acknowledge receipt of Complainant’s cease and desist letter and anticipated a further communication from the legal department to be sent to Complainant’s attention.

8.            Complainant sent a second letter to Respondent on January 2, 2012 demanding the immediate removal of all content from the website solarmart.com. Right after, Semion Schneider called Complainant from the LeadsYou.com phone number, and offered to sell the disputed domain name <solarmart.com> to Complainant for USD$10,000.00.

9.            Therefore, Respondent’s true identity is Mushka a.k.a. Semion Schneider dba LeadsYou.com. 

B. Respondent

Respondent referred to Complainant’s contentions as follows:

1.    Complainant’s registered mark entitles its owner to prevent third parties only from using it in connection with a blog. However, the website solarmart.com does not provide a blog or an online journal; it rather is a solar business directory.

2.    Respondent purchased the domain name <solarmart.com> on November 1, 2007, aiming to develop an online and shopping platform for solar related business. The domain name <solarmart.com> comprises exactly the “right combination of words for this directory: ‘solar’ for the obvious reasons and ‘mart’ as market (bazaar/center)”. Right after the domain name’s purchase, Respondent developed the website <solarmart.com>.  Therefore, Respondent has been engaged in the development and operation of the business located at the website to which the disputed domain name reverts to.

3.    Complainant acquired his domain name <solarmart.net> on approximately October 22, 2008, that is, a year after Respondent acquired the disputed domain name.

4.    Respondent never offered to sell the disputed domain name to Complainant.

5.    Respondent is Media J, LLC, represented by Jenny Schneider. Semion Schneider has no relation with Respondent’s business; he is simply Ms. Schneider’s father.

6.    Respondent contacted an attorney upon receiving Complainant’s letter dated January 2, 2012 and responded to Complainant’s letter through said attorney on March 16, 2012.

C. Complainant’s Additional Submission

1.         There is no factual basis to assert Jenny Schneider as Respondent in this case.

2.         Jenny Schneider has not shown evidence to prove that Media J. LLC is the owner of the disputed domain name.

3.         Complainant’s use of the SOLAR MART mark predates Respondent’s use of the disputed domain name <solarmart.com> by more than three years.

COMPLAINANT’S ATTEMPT TO WITHDRAW THE COMPLAINT.

Complainant submitted on March 12, 2012 a request before the National Arbitration Forum to immediately withdraw the Complaint.

Paragraph 12 of the National Arbitration Forum’s Supplemental Rules regulates the effects of a withdrawal request depending on the administrative proceeding’s stage at which it is submitted:

12. Withdrawal

(a)       Prior to Commencement

(i)         Before the five (5) Calendar Day deficiency period described in Rule 4(b) expires, the Complainant may withdraw the Complaint without prejudice. A withdrawal request must be Submitted to the Forum in writing and signed by the Complainant; an electronic signature complying (refer to Annex A) will be accepted. Upon the Forum’s receipt of the withdrawal request, the Complaint will be withdrawn without prejudice and the administrative proceeding will be terminated.

(ii)         The Complainant may re-initiate a proceeding, which was properly withdrawn pursuant to Supplemental Rule 12(a)(i), within thirty (30) Calendar Days. A re-initiation fee of $100 must accompany the request to re-initiate the proceeding.

(iii)        If the Complaint was withdrawn pursuant to Supplemental Rule 12(a)(i) and if the Complainant does not re-initiate the Complaint at the end of thirty (30) Calendar Days, a subsequent Complaint will be treated as a new Complaint and must be accompanied by payment of the appropriate fees.

(b)       After Commencement and Prior to Response:

(i)         After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn by the Complainant. A withdrawal request must be Submitted to the Forum in writing and signed by the Complainant; an electronic signature (refer to Annex A) will be accepted. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(i) will be dismissed without prejudice.

(ii)         After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn pursuant to a joint request made by both parties. A withdrawal request must be Submitted to the Forum in writing and signed by both Parties; electronic signatures (refer to Annex A) will be accepted. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(ii) will be dismissed with prejudice.

(c)       After Response is Received: After a Response that complies with Supplemental Rule 5 has been received by the Forum, but before a Panel decision is published, the Complaint may be withdrawn if both parties agree to the withdrawal. A withdrawal request must be Submitted to the Forum in writing and signed by both parties; electronic signatures (refer to Annex A) will be accepted. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(c) will be dismissed with prejudice.

(d)       The Complaint cannot be withdrawn after a Panel decision is published. (Underlining is mine).

Since the withdrawal request was submitted after the Respondent’s response was received by the Forum but before the Panel decision was published, it needed to be signed by both parties. Given the withdrawal request’s failure to meet this requirement, the Forum did not grant it.

However, this Panel believes that the Complainant’s attempt to withdraw the complaint is a clear expression of his lack of interest in the disputed domain name and the administrative proceeding’s outcome.  The Panel therefore, concludes that Respondent will not oppose said withdrawal. Even if the supplemental rules state a time and a manner in which said withdrawal request must have been submitted, the Panel cannot ignore the Complainant’s will:  Whereas his initial will to get the domain name <solarmart.com> transferred was this proceeding’s raison d’etre, his ultimate disinterest in the disputed domain name  justifies this proceeding’s termination.

Rule 17 of the UDRP Rules allows the Panel to terminate an administrative proceeding when its continuation becomes unnecessary:

17. Settlement or Other Grounds for Termination

(a)  If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.

(b)  If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel. (underline added).

This Panel believes that it became unnecessary to continue this administrative proceeding due to the above mentioned circumstances.  

The Panel orders the proceeding to be immediately terminated, due to the unilateral withdrawal of these proceedings by the Complainant, which is interpreted by the Panel as his lack of interest in recovering the domain name <solarmart.com>.

 

Fernando Triana, Esq., Panelist

Dated:  March 28, 2012

 

 

 

 

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NATIONAL ARBITRATION FORUM

DECISION

Discover Financial Services v. Zhichao Yang

Claim Number: FA1303001490736

PARTIES

Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA.  Respondent is Zhichao Yang (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <carddiscovery.com>, <discovercardloan.com>, <discoverceditcard.com>, <discoverfinancialpersonalloans.com>, <discoverpaydayloan.com>, <discoverperosnalloans.com>, <discoverpersanalloans.com>, <discoverpersnalloans.com>, <discoverpersoalloans.com>, <discoverpersonalloand.com>, <discoverpersonlaloans.com>, <discoverpersonnelloans.com>, <discoverstudentloand.com>, <discoverstudetnloans.com>, <discoverstudntloans.com>, <discoverstundentloans.com>, <discoversutdentloans.com>, <discoverpersonalsloans.com>, <discoversstudentloans.com>, <discoverypersonalloan.com>, <discovercardpersonalloans.com>, <discovercardstudentloans.com>, <discoverpersonallloans.com>, <discoverpersonaloan.com>, <discoverpersonalsloan.com>, <discoverpersonelloans.com>, <discoverpersonloan.com>, <discoverpersonnalloans.com>, <discoverspersonalloans.com>, <discoverypersonaloans.com>, <wwwdiscoverfinancial.com>, <discoerpersonalloans.com>, <discoerstudentloans.com>, <discovecreditcard.com>, <discoverpersonallans.com>, <discoverpersonalloads.com>, <discoverpersonalloas.com>, <discoverpersonallonas.com>, <discoverstudentlans.com>, <discoverstudentloads.com>, <discoverstudentloas.com>, <discoverstudentlonas.com>, <discovrbank.com>, <discovrstudentloans.com>, <discovrycard.com>, <mydisccovercard.com>, <wwwdiscoverloans.com>, <discovermorgage.com>, and <discovermortage.com>, registered with Godaddy.Com, Llc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2013; the National Arbitration Forum received payment on March 21, 2013.

On Mar 21, 2013, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the  <carddiscovery.com>, <discovercardloan.com>, <discoverceditcard.com>, <discoverfinancialpersonalloans.com>, <discoverpaydayloan.com>, <discoverperosnalloans.com>, <discoverpersanalloans.com>, <discoverpersnalloans.com>, <discoverpersoalloans.com>, <discoverpersonalloand.com>, <discoverpersonlaloans.com>, <discoverpersonnelloans.com>, <discoverstudentloand.com>, <discoverstudetnloans.com>, <discoverstudntloans.com>, <discoverstundentloans.com>, <discoversutdentloans.com>, <discoverpersonalsloans.com>, <discoversstudentloans.com>, <discoverypersonalloan.com>, <discovercardpersonalloans.com>, <discovercardstudentloans.com>, <discoverpersonallloans.com>, <discoverpersonaloan.com>, <discoverpersonalsloan.com>, <discoverpersonelloans.com>, <discoverpersonloan.com>, <discoverpersonnalloans.com>, <discoverspersonalloans.com>, <discoverypersonaloans.com>, <wwwdiscoverfinancial.com>, <discoerpersonalloans.com>, <discoerstudentloans.com>, <discovecreditcard.com>, <discoverpersonallans.com>, <discoverpersonalloads.com>, <discoverpersonalloas.com>, <discoverpersonallonas.com>, <discoverstudentlans.com>, <discoverstudentloads.com>, <discoverstudentloas.com>, <discoverstudentlonas.com>, <discovrbank.com>, <discovrstudentloans.com>, <discovrycard.com>, <mydisccovercard.com>, <wwwdiscoverloans.com>, <discovermorgage.com>, and <discovermortage.com>, domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names.  Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it.">This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@ discoverstudentloand.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discoverstundentloans.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discoversstudentloans.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discovercardstudentloans.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discoverpersonalsloan.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discoverpersonnalloans.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

wwwdiscoverfinancial.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discovecreditcard.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discoverpersonalloas.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discoverstudentloads.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., postmaster@

discovrbank.com, This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it..">This email address is being protected from spambots. You need JavaScript enabled to view it..  Also on March 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On April 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1.  Respondent’s <carddiscovery.com>, <discovercardloan.com>, <discoverceditcard.com>, <discoverfinancialpersonalloans.com>, <discoverpaydayloan.com>, <discoverperosnalloans.com>, <discoverpersanalloans.com>, <discoverpersnalloans.com>, <discoverpersoalloans.com>, <discoverpersonalloand.com>, <discoverpersonlaloans.com>, <discoverpersonnelloans.com>, <discoverstudentloand.com>, <discoverstudetnloans.com>, <discoverstudntloans.com>, <discoverstundentloans.com>, <discoversutdentloans.com>, <discoverpersonalsloans.com>, <discoversstudentloans.com>, <discoverypersonalloan.com>, <discovercardpersonalloans.com>, <discovercardstudentloans.com>, <discoverpersonallloans.com>, <discoverpersonaloan.com>, <discoverpersonalsloan.com>, <discoverpersonelloans.com>, <discoverpersonloan.com>, <discoverpersonnalloans.com>, <discoverspersonalloans.com>, <discoverypersonaloans.com>, <wwwdiscoverfinancial.com>, <discoerpersonalloans.com>, <discoerstudentloans.com>, <discovecreditcard.com>, <discoverpersonallans.com>, <discoverpersonalloads.com>, <discoverpersonalloas.com>, <discoverpersonallonas.com>, <discoverstudentlans.com>, <discoverstudentloads.com>, <discoverstudentloas.com>, <discoverstudentlonas.com>, <discovrbank.com>, <discovrstudentloans.com>, <discovrycard.com>, <mydisccovercard.com>, <wwwdiscoverloans.com>, <discovermorgage.com>, and  <discovermortage.com>  domain names, the domain names at issue, are confusingly similar to Complainant’s  DISCOVER mark.

2.  Respondent does not have any rights or legitimate interests in the domain names at issue.

3.  Respondent registered and used the domain names at issue in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Discover is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. The company operates the DISCOVER® Card in addition to offering personal and student loans, online savings products, certificates of deposit and money market accounts through its DISCOVER® Bank subsidiary.  Complainant has rights in the DISCOVER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,743,341 registered July 29, 2003) and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,127,797 registered November 14, 1997).  Respondent registered the disputed domain names on July 10, 2012 and March 29, 2012.The disputed domain names are confusingly similar to Complainant’s DOSCOVER mark. Respondent’s disputed domain names contain Complainant’s DISCOVER mark in its entirety. Respondent’s domain names add the generic terms such as “credit,” “card,” “loan,” and “financial.” Respondent has never been commonly known by the disputed domain names. Complainant has never given Respondent permission or authority to use its DISCOVER mark in any way. The majority of the disputed domain names resolve to a parked website containing links that compete with Complainant’s business. The <discoverpersanalloans.com> domain name resolves to a website featuring explicit content. The <discoerstudentloans.com> domain name resolve to a page offering free electronic products. Respondent registered and is using the disputed domain names in bad faith. Respondent had knowledge of Complainant’s mark when it registered its confusingly similar disputed domain names.  Respondent’s use of the disputed domain names to advertise links to related products and explicit content violates Policy ¶ 4(b)(iii).  Respondent is using confusingly similar domain names to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DISCOVER mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website .

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Identical and/or Confusingly Similar

Complainant owns rights in its DISCOVER mark as evidenced by its registrations with the USPTO (Reg. No. 2,743,341 registered July 29, 2003) and SAIC (Reg. No. 1,127,797 registered November 14, 1997).   This evidence of a registration for a given mark with a trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Policy does not require that the mark be registered in the country in which the respondent operates, only that the complainant can demonstrate a mark in some jurisdiction. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel finds that Complainant has rights in the DISCOVER mark under Policy ¶ 4(a)(i).

The <carddiscovery.com>, <discovercardloan.com>, <discoverceditcard.com>, <discoverfinancialpersonalloans.com>, <discoverpaydayloan.com>, <discoverperosnalloans.com>, <discoverpersanalloans.com>, <discoverpersnalloans.com>, <discoverpersoalloans.com>, <discoverpersonalloand.com>, <discoverpersonlaloans.com>, <discoverpersonnelloans.com>, <discoverstudentloand.com>, <discoverstudetnloans.com>, <discoverstudntloans.com>, <discoverstundentloans.com>, <discoversutdentloans.com>, <discoverpersonalsloans.com>, <discoversstudentloans.com>, <discoverypersonalloan.com>, <discovercardpersonalloans.com>, <discovercardstudentloans.com>, <discoverpersonallloans.com>, <discoverpersonaloan.com>, <discoverpersonalsloan.com>, <discoverpersonelloans.com>, <discoverpersonloan.com>, <discoverpersonnalloans.com>, <discoverspersonalloans.com>, <discoverypersonaloans.com>, <wwwdiscoverfinancial.com>, <discoerpersonalloans.com>, <discoerstudentloans.com>, <discovecreditcard.com>, <discoverpersonallans.com>, <discoverpersonalloads.com>, <discoverpersonalloas.com>, <discoverpersonallonas.com>, <discoverstudentlans.com>, <discoverstudentloads.com>, <discoverstudentloas.com>, <discoverstudentlonas.com>, <discovrbank.com>, <discovrstudentloans.com>, <discovrycard.com>, <mydisccovercard.com>, <wwwdiscoverloans.com>, <discovermorgage.com>, <discovermortage.com>

disputed domain names are confusingly similar to Complainant’s DISCOVER mark.  Respondent’s disputed domain names contain Complainant’s DISCOVER mark in its entirety or a variation thereof.  Some of the disputed domain names contain an extra “y” or an additional term such as “credit,” “card,” “loan,” “financial,’ ‘personalloan(s),” “paydayloan(s),” and “studentloan(s).”  The additional terms are terms related to Complainant’s industry making them more likely to be confusingly similar to Complainant’s mark.  The disputed domain names add the generic top-level domain (“gTLD”) “.com.” The <wwwdiscoverfinancial.com>,and <wwwdiscoverloans.com> domain names feature “www” before Complainant’s mark followed by “financial” or “loans.” The <discoerpersonalloans.com>, <discoerstudentloans.com>, <discovecreditcard.com>, <discovrbank.com>, <discovrstudentloans.com>, <discovrycard.com>, and  <mydisccovercard.com> domain names contain common misspellings of Complainant’s DISCOVER mark.  These variations are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).  Therefore the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s DISCOVER mark pursuant to Policy ¶ 4(a)(i).

The Panel finds that Policy ¶ 4(a)(i) has been established. 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Respondent has no rights or legitimate interests in the disputed domain names. Respondent has never been commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Complainant has not licensed or authorized Respondent to use its DISCOVER mark in any way. The WHOIS information lists “Zhichao Yang” as the Registrant of the disputed domain names. Respondent has provided no other evidence of it being commonly known by the disputed domain names.  A respondent is not commonly known by a disputed domain name where there is no evidence on the record indicating that it is commonly known by a disputed domain name, or where a complainant has not authorized a respondent to use its given mark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policies ¶¶ 4(c)(i) and (iii).  The majority of the disputed domain names resolve to parked pages featuring links to other financial services, directly competing with Complainant’s business.  Some of these links include, “Financial Planning,” “Loans,” “Credit Cards,” “Stocks,” “ Get a Loan,” “Bad Credit Cards,” “Loan Consolidation,” “Visa Credit Card Balance,” and “Loan Rates.”  The <discoverpersanalloans.com> domain name resolves to a website featuring explicit content.  Links featured on the website resolving from this domain name include, “Married But Dating,” “Live Sex Cams,” and “Adult Chat Line Toll Free.”  The <discoerstudentloans.com> domain name resolve to a page offering free electronic products. This domain name actually resolves to a website featuring links such as, “Student Loans,” “Loan Calculator,” and “Loan Rates.”  Hosting a parked page featuring links to third parties, some of which that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).  Hosting a site featuring explicit material is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”). The Panel presumes that Respondent is collecting pay-per-click fees from the resolving parked websites. Based on the evidence provided, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

Registration and Use in Bad Faith

Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).  Respondent’s disputed domain names resolve to websites featuring links that compete with Complainant’s business because they relate to the products or services Complainant offers.  Further, featuring explicit content on a website resolving from a disputed domain name is bad faith.  Using a confusingly similar domain name to redirect Internet users to third party websites featuring competing links or explicit links in order to collect pay-per-click fees, disrupts a complainant’s business and violates Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant.  The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”) Accordingly, Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).

Respondent is intentionally attempting to attract Internet users to its resolving websites for commercial gain.  In this regard, Respondent is attempting to cause confusion between Complainant’s DISCOVER mark as to the source, affiliation, or endorsement of the disputed domain names. Previous panels have found bad faith under Policy ¶ 4(b)(iv) when a respondent uses a confusingly similar domain name to attract Internet users to its websites featuring competing links to third parties. Previous panels have also found that featuring explicit content on a website resolving from a disputed domain name is bad faith. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business.  The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site.  There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”) ; see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name). Therefore, Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).

In light of the fame and notoriety of Complainant's DISCOVER mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark.  However, some UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.  However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the  <carddiscovery.com>, <discovercardloan.com>, <discoverceditcard.com>, <discoverfinancialpersonalloans.com>, <discoverpaydayloan.com>, <discoverperosnalloans.com>, <discoverpersanalloans.com>, <discoverpersnalloans.com>, <discoverpersoalloans.com>, <discoverpersonalloand.com>, <discoverpersonlaloans.com>, <discoverpersonnelloans.com>, <discoverstudentloand.com>, <discoverstudetnloans.com>, <discoverstudntloans.com>, <discoverstundentloans.com>, <discoversutdentloans.com>, <discoverpersonalsloans.com>, <discoversstudentloans.com>, <discoverypersonalloan.com>, <discovercardpersonalloans.com>, <discovercardstudentloans.com>, <discoverpersonallloans.com>, <discoverpersonaloan.com>, <discoverpersonalsloan.com>, <discoverpersonelloans.com>, <discoverpersonloan.com>, <discoverpersonnalloans.com>, <discoverspersonalloans.com>, <discoverypersonaloans.com>, <wwwdiscoverfinancial.com>, <discoerpersonalloans.com>, <discoerstudentloans.com>, <discovecreditcard.com>, <discoverpersonallans.com>, <discoverpersonalloads.com>, <discoverpersonalloas.com>, <discoverpersonallonas.com>, <discoverstudentlans.com>, <discoverstudentloads.com>, <discoverstudentloas.com>, <discoverstudentlonas.com>, <discovrbank.com>, <discovrstudentloans.com>, <discovrycard.com>, <mydisccovercard.com>, <wwwdiscoverloans.com>, <discovermorgage.com>, and  <discovermortage.com>, domain names be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  April 24, 2013

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NATIONAL ARBITRATION FORUM

 

DECISION

American Express Marketing & Development Corp. v. Joseph DeNunzio

Claim Number: FA0904001259348

 

PARTIES

Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill, of American Express Marketing & Development Corp., New York, USA.  Respondent is Joseph DeNunzio (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <amexfs.com> and <amexfinancialservices.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Jeffrey M. Samuels, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2009.

On April 29, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <amexfs.com> and <amexfinancialservices.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to This email address is being protected from spambots. You need JavaScript enabled to view it. and This email address is being protected from spambots. You need JavaScript enabled to view it. by e-mail.

A timely Response was received and determined to be complete on May 11, 2009.

An Additional Submission was received from Complainant on May 13, 2009 and determined to be timely and complete pursuant to Supplemental Rule 7.

An Additional Submission, dated May 14, 2009, was received from Respondent and determined to be timely pursuant to Supplemental Rule 7.  Additional correspondence, in the form of an email dated May 21, 2009, was also submitted by Respondent.[1]

On May 18, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant American Express Marketing & Development Corp. (American Express) is a multi-national company with offices worldwide.  American Express offers a wide variety of financial services, including charge card, credit card, smart card, and stored value card services, banking and insurance services, as well as travel and travel-related services and rewards programs that are used by millions worldwide.  Such services have been offered under the mark AMEX since 1969, which mark Complainant has registered in nearly 100 countries.  See Complaint, Exhibit 1.  American Express has over 92 million cardholders worldwide.  In 2008, Complainant grossed over $28 billion and had over $5 billion in marketing, promotion, rewards, and Cardmember services expenditures worldwide.   As such, Complainant submits that the AMEX mark is famous around the world.

Complainant indicates that the disputed domain names, amexfs.com and amexfinancialservices.com, connect to web pages advertising “Financing for Machinery, Equipment and Non-Conforming Real Estate” services.  See Complaint, Exhibit 6.  

Complainant contends that tacking on “fs” or “financial services” to Complainant’s AMEX mark does not change the fact that Complainant’s AMEX mark remains the prominent feature of the disputed domain names.

Complainant asserts that Respondent has no legitimate rights in the disputed domain names inasmuch as the domain names infringe Complainant’s AMEX mark.  “After all,” Complainant asks, “how can there be legitimate use of a domain incorporating trademarks that someone else has already registered?”

Complainant further argues that Respondent is not commonly known by either of the domain names in dispute.  Complainant notes that the WHOIS record identifies the Respondent as Joseph DeNunzio and that while Respondent incorporated in California in 2006 under the name “Amex Financial Services,” Complainant asserts that in order to fall within the “commonly known by” language of paragraph 4(c)(ii) of the Policy, a respondent must be commonly known by the domain name before the disputed domain name was registered.  The disputed domain names apparently were registered in 2005. 

Complainant also argues that Respondent is not providing a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain names.  In this regard, Complainant contends that the evidence establishes “Respondent’s bad faith in attempting to capitalize on the goodwill Complainant has established in its marks and in diverting consumers to Respondent’s web site that offers competing services.”

Complainant further contends that Respondent acted in bad faith.  It maintains that Respondent’s bad faith registration of the amexfs.com and amexfinancialservices.com domain names may be inferred from the fact that Respondent deliberately chose to register a domain name that entirely incorporated Complainant’s famous AMEX mark and merely add “fs” and “financial services.”

According to Complainant:

It appears that the motivation behind registering the amexfinancialservices.com or amexfs.com Domain Names was to capitalize on the goodwill of Complainant’s mark and on the millions of potential monthly visitors to the American Express web site who might mistakenly type in amexfs.com or amexfinancialservices.com when looking for the Complainant’s web site.  There remains a likelihood of consumer confusion and tarnishment of Complainant’s AMEX mark, as Complain[ant] has no control over the domain names or the web sites.  One could infer from this conduct that the amexfs.com and amexfinancialservices.com Domain Names are somehow associated with, or endorsed by American Express, which they are not.

With respect to the tarnishment argument, Complainant states that the registrant of the disputed domain names, a licensed broker, has been cited by the California Department of Real Estate and Ordered to Desist and Refrain from violation of Section 10085 of the Business and Professions Code and Section 2970 of Chapter 6, Title 10, California Code of Regulations.  Complainant asserts that, while operating his business at the website found at the URLs at issue, Respondent violated the above-mentioned Code and Regulation by “claiming, demanding, charging, receiving, collecting or contracting for the collection of advanced fees.”

Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line locations, by creating a likelihood of confusion with the AMEX mark as to the source, sponsorship, affiliation, or endorsement of its web site or other on-line locations or of a product or service on its web site.  According to Complainant, “[i]f consumers are seeking the American Express web site and mistakenly access the Respondent’s site, it is likely that many consumers will assume that the site is affiliated with American Express thereby creating confusion for consumers, disrupting American Express’ business and damaging American Express’ reputation.  Respondent’s use of the amexfs.com or amexfinancialservices.com Domain Names will perpetuate consumer fraud.  Such interference with the AMEX mark constitutes bad faith use of the Domain Names as defined by Paragraph 4(b) of the Domain Name Dispute Resolution Policy.”

B. Respondent

In his Response, Respondent contends as follows:

1. His web site does not display, offer, accept, or advertise charge cards, credit cards, smart card and store value card services, banking and insurance services, travel and travel-related services or rewards programs.

2. He has no cardholders and annual sales of less than $100,000.

3. He does not sell to the public, advertise on TV, radio or in print advertising that is addressed to the public.

4. The word AMEX dates back to 1842 and was first used by the American Stock Exchange.

5.  The “fs” was added to the domain name to separate the two names and to shorten the typing in the search engine.  The “fs” has no association with American Express.  Further, a user must type in amexfs.com and amexfinancialservices.com to access the web site.  Without typing in the full web site name, the web site will not open.

6. Using the “Google” and “Yahoo” search engines, a consumer cannot find amexfs.com or amexfinancialservices.com by just typing the word “AMEX.”   The consumer must type in the complete name to access the site.  See Response, Exhibit A.

7.  If a consumer finds one of the challenged sites, there is no “Log In” feature to access a credit card account.  The site is designed for business use only.

8. With respect to the action of the California Department of Real Estate, such action was not directed at the web site or web site names or the content of such site.  Respondent indicates that he is currently in good standing with the Department.  See Response, Exhibit B.

9. The use of “fs” and of the complete name “amexfinancialservices.com” was to disassociate Respondent from American Express.

10. With respect to Complainant’s assertion that the disputed domain names were taken to capitalize and lure consumers away from Complainant’s site, Respondent indicates that information taken for MSN Search Engine “Live” reveals that no amexfs.com or amexfinancialservices.com re-directs are listed.  See Response, Exhibit C.

11. Respondent notes that he started using AMEX in his trade name in 1984 and that there are over 265 companies listed in the “superpages.com” that use the name AMEX as part of their trade name listing.  See Response, Exhibit D.

C. Additional Submissions

In its Additional Submission, Complainant contends that the disputed sites prominently use the AMEX mark in connection with financial services, services offered by American Express.  Indeed, Complainant emphasizes, the homepage of the Respondent’s site has a prominent title reading “AMEX Financial Services.”  According to Complainant, “[g]iven that there is an association for consumers with American Express, its AMEX mark and the offering of financial services, consumers will believe that the site is affiliated with or sponsored by American Express.

Complainant further asserts that the fact that Respondent does not have cardholders and has smaller annual sales is irrelevant in determining infringement and violation of the Policy.  Moreover, Complainant adds, the instant dispute is not between American Express and the American Stock Exchange.

Complainant also indicates that the addition of generic terms, such as financial services, does not mitigate confusion.  “In fact, using generic terms that reflect the services offered under the trademark owner’s mark … can increase the likelihood of confusion.”

Complainant also argues that the majority of internet users use natural searches and that the use of AMEX in a domain name will result in third parties seeking the American Express site being diverted to Respondent’s site.  According to Complainant, if Internet searchers do not find the American Express site, they may not look further to find American Express, thus interfering with the ability of American Express to conduct its business on the internet.

Finally, Complainant reemphasizes the action taken by the California Department of Real Estate against Respondent in connection with the operation of his business at the website found at the domain names in issue.  Noting that it has no control over the Respondent’s business, Complainant contends that “so long as Respondent owns and operates the websites at issue[], there is continuing infringement and ongoing risk that the actions of the company could result in tarnishment to the AMEX brand.

Respondent, in his Additional Submission, contends as follows:

1. His web site offers financial services, such as commercial real estate loans, equipment loans and leases to businesses.  He is not engaged in consumer lending and does not offer any goods or services competitive with those offered by Complainant.

2, Based on a search of a computer telephone directory, there are 13 companies offering financial services under the name “Amex Financial Services.”  American Express was not one of the companies listed.

3, The disputed web site contains no information about American Express or of any products or services offered by American Express.

4. Respondent was acting in good faith when he purchased the domain names in issue.  Respondent contends that he was acting on the advice of a third party in registering the domain names in issue.  Due diligence was performed to insure that adding the “fs” to the domain name would further distance it from American Express.

5. Complainant has not presented any evidence to substantiate its contention regarding the fame of the AMEX mark.

6. Noting that American Express, in its Additional Submission, referred to a number of UDRP decisions that resulted in domain names containing “AMEX” being transferred to Complainant, Respondent asserts that the instant proceeding should be immediately suspended until Complainant produces specific allegations pertinent to this case and “how the outcome of each case was a similar factor in this case dispute.”[2]

7. Respondent refers to its Exhibit D and contends that such exhibit establishes that 265 companies use a combination of the words “Amex,” “Financial,” or “Services” in their trade names.

8. In response to Complainant’s assertion that a majority of internet users use natural searches and that the use of “amex” in a domain name will result in third parties seeking Complainant’s site being diverted to Respondent’s site, Respondent indicates that he tested this claim and found no redirects from his web site.

9. With respect to the action of the California Department of Real Estate, Respondent declares that the issue before the Department has no relevance with respect to this domain name dispute.

10. Respondent points out that he purchased the domain names in issue in good faith from an authorized third party and that such third party “made no claims or flagged comments to a possible conflict with American Express.”

 

FINDINGS

 

The Panel finds that: (1) the disputed domain names are confusingly similar to the mark AMEX; (2) Complainant has rights in the AMEX mark; (3) Respondent has no rights or legitimate interests in the disputed domain names; and (4) the domain names were registered and are in being used in bad faith.

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Panel finds that the disputed domain names, amexfinancialservices.com and amexfs.com, are confusingly similar to the AMEX mark.  The disputed domain names contain the AMEX mark in its entirety, merely adding a descriptive term, i.e., “financial services,” or an admittedly shortened version of such term, i.e., “fs.” See, e.g., Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum March 5, 2007) (finding confusing similarity where kohlerbaths.com contained complainant’s mark in its entirety adding the descriptive term “baths”).   Nor does the addition of a generic top-level domain, such as “.com,” serve to adequately distinguish the domain names from Complainant’s mark.  See, e.g., Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007).

The Panel further concludes that the evidence establishes that Complainant has rights in the AMEX mark.  The evidence supports a determination that Complainant owns nearly 300 trademark registrations for the AMEX mark around the world and that such mark has been in use since 1969, and is heavily advertised and promoted.

While Respondent has submitted evidence from superpages.com showing that over 265 companies use the term “AMEX” as part of their trade name, such evidence does not defeat Complainant’s rights in the AMEX mark.  The consensus view among ICANN panelists is that if a complainant owns a registered trademark, it satisfies the threshold requirement of having trademark rights.  See Uniroyal Engineered Products, Inc. v. Nauga Network Services D2000-0503 (WIPO July 18, 2000). 

Rights or Legitimate Interests

The Panel concludes that Complainant has met its burden of establishing that Respondent does not have rights or legitimate interests in the disputed domain names.  There is no evidence that Respondent, Joseph DeNunzio, is commonly known by either of the disputed domain names or that he is making a legitimate noncommercial or fair use of the domain name.  Moreover, in view of the Panel’s determination that the disputed domain names are confusingly similar to Complainant’s AMEX mark, it cannot be held that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services.

Registration and Use in Bad Faith

The Panel finds that Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line locations, by creating a likelihood of confusion with the AMEX mark as to the source, sponsorship, affiliation, or endorsement of its web site or other on-line locations or of a product or service on its web site, within the meaning of paragraph 4(b)(iv) of the Policy.  As determined above, the disputed domain names incorporate in full Complainant’s AMEX mark. As such, and given that Complainant uses the AMEX mark in connection with financial services and that the term “financial services” or its shortened version, “fs,” is used as part of the disputed domain names, Internet users are likely to believe that Respondent’s site is sponsored or affiliated with Complainant. Respondent’s contention that Internet users will not access Respondent’s site simply by typing the word “Amex” does not change the fact that consumers, upon encountering the domain names in dispute, are likely to access Respondent’s site under the mistaken impression that such site is sponsored or affiliated with Complainant.

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <amexfs.com> and <amexfinancialservices.com> domain names be TRANSFERRED from Respondent to Complainant.

Jeffrey M. Samuels, Panelist
Dated: June 3, 2009

 

 

[1] This submission appears untimely under Supplemental Rule 7 and in violation of the rule limiting a party to only one additional submission.  As such, it has not been considered by the Panel in reaching its decision.

[2] The Panel declines Respondent’s invitation to suspend the instant proceedings.  The Panel recognizes that each proceeding brought under the UDRP must be decided based upon its own particular facts and emphasizes that this proceeding was so decided.

 

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NATIONAL ARBITRATION FORUM

 

DECISION

The American Automobile Association, Inc. v.

Domains By Proxy, Inc., by itself and as proxy for its customers

Claim Number: FA0809001226461

 

PARTIES

Complainant is The American Automobile Association, Inc. (“Complainant”), represented by Roger A. Ford, of Covington & Burling LLP, Washington, D.C, USA.  Respondent is Domains By Proxy, Inc. (“Respondent” or “DBP”) represented by Kelly L. Lewis of Domains By Proxy, Inc., Scottsdale, Arizona, USA.  Customers of Domains By Proxy, Inc. are aaacetravel.com and AAAPremierCreditRepair and Excel Fields and AAA National Finance Solutions and BUSSARD&apos;S ALL-PRO AUTOMOTIVE INC and Marcella English and Andrew Dudzik and AAA-ATM LLC and edward lavallee and scw llc and shane johnson and Mukesh Maloo and Tamas Torok and Dennis Rochford and Nick Fine and Movin&apos;on Sounds and Security Inc. and Linda Allen and Timothy Nichols and Lanie Whittaker and 9126-0802 quebec inc. and Triple A Internaional, Inc and terri watling and aaa transfer services and Colleen Laneer and DYLON ROSS and AAA Travel Smooth and Parmamagoo and Karl Steinmann and madison L&apos;Insalata and AAAA and AAA Waranty and Herbert Kraft and personal and Michael Oglesby and The Pleasure Connection and Home Team USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aaa-automotivewarrantydeals.com>, <aaa-travel-international.biz>, <aaa-travel-international.info>, <aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>, <aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacorporatetravelsolutions.com>, <aaacorporatetravelsolutions.net>, <aaacorporatetravelsolutions.org>, <aaacredit4u.com>, <aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaaexchangenetwork.com>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>, <aaapenguintravel.com>, <aaapremiercreditrepair.biz>, <aaapremiercreditrepair.org>, <aaaprovedautorepair.com>, <aaarecoveryservices.com><aaatourguide.com>, <aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelfare.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaavinsurance.com>, <aaawebservices.net>, <onlinetriplea.com>, <triple-a-tracker.com>, <tripleaatm.com>, <tripleamagazine.com>, <triplearaids.com>, and <tripleatracker.com>, registered with Godaddy.com, Inc., and <aaaluxurytravel.com>, <aaareferraltraveltours.net>, <triple-a-agency.com>, <tripleamexico.com>, <tripleamexico.net>, <wwwaaa-warranty.com> and <wwwaaawarranty.com>, registered with Wild West Domains, Inc.

PANEL

The undersigned each certify that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Alan L. Limbury as Panelist, David E. Sorkin as Panelist, and Sandra J. Franklin as Panelist and Chairperson.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2008.  The Complaint filed named Domains By Proxy, Inc. (“DBP”) as the Respondent and listed several aliases, which are the names of DBP’s customers.

On September 29, 2008, Godaddy.com, Inc., confirmed by e-mail to the National Arbitration Forum that the <aaa-automotivewarrantydeals.com>¸<aaa-travel-international.biz>, <aaa-travel-international.info>, <aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>, <aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacorporatetravelsolutions.com>, <aaacorporatetravelsolutions.net>, <aaacorporatetravelsolutions.org>, <aaacredit4u.com>, <aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaaexchangenetwork.com>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>, <aaapenguintravel.com>, <aaapremiercreditrepair.biz>, <aaapremiercreditrepair.org>, <aaaprovedautorepair.com>, <aaarecoveryservices.com>, <aaatourguide.com>, <aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelfare.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaavinsurance.com>, <aaawebservices.net>, <onlinetriplea.com>, <triple-a-tracker.com>, <tripleaatm.com>, <tripleamagazine.com>, <triplearaids.com>, and <tripleatracker.com> domain names are registered with Godaddy.com, Inc. and that the registrants are 32 entities or individuals, who are bound by the Godaddy.com, Inc. registration agreement and have thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 30, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaaluxurytravel.com>, <aaareferraltraveltours.net>, <triple-a-agency.com>, <tripleamexico.com>, <tripleamexico.net>, <wwwaaa-warranty.com> and <wwwaaawarranty.com> domain names are registered with Wild West Domains, Inc. and that the registrants are 5 entities or individuals, who are bound by the Wild West Domains, Inc. registration agreement and have thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On October 6, 2008, the Forum notified Complainant that, because there were multiple Respondents listed in the Complaint, Complainant would have to either choose which Respondent to keep in the case, or argue that there was only one Respondent.

On October 10, 2008, Complainant filed its First Amended Complaint, electing the second option above, arguing that DBP was the proper Respondent.  A thorough discussion of this issue is laid out in the body of the decision below.

On October 10, 2008, in response to the First Amended Complaint, the Forum required that Complainant drop DBP as a Respondent and leave it to the Panel to decide what to do about the multiple “alias” (DBP customer) respondents. On October 13, 2008, Complainant filed its Second Amended Complaint, complying with that direction.

On October 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 5, 2008 by which Responses could be filed to the Complaint, was transmitted to DBP’s customers via e-mail, post and fax, to all entities and persons listed on their registrations as technical, administrative and billing contacts, and to This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. You need JavaScript enabled to view it., This email address is being protected from spambots. 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Several timely responses from DBP’s customers were received and determined to be complete on November 5, 2008.  Additional responses were received on November 6, 2008, which is after the deadline for filing a response, and were not considered to be in compliance with paragraph 5 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), as they were received late in electronic copy, late in hard copy, or received in hard copy only. 

An Additional Submission was received from Complainant on November 10, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7.

A second Additional Submission was received from Complainant on November 13, 2008 that is not considered to be in compliance with Supplemental Rule 7.

On December 2, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist, David E. Sorkin as Panelist, and Sandra J. Franklin as Panelist and Chairperson.

On December 11, 2008, the Panel issued an Interim Order, directing the following:

The Panel orders that the original Complaint filed in this case be accepted by NAF.  In the alternative, at Complainant’s election, Complainant may, within seven (7) days of receiving this Order, amend its Second Amended Complaint to name Domains by Proxy, Inc. the Respondent “by itself and as proxy for its customers” presently holding the domain names in dispute.  Respondent Domains By Proxy, Inc. must be served by NAF with the Complaint or the further amended Complaint and a copy of this Order and given the full response time allowed under the Policy. 

Unless Respondent Domains By Proxy, in making its Response, expresses any objection to the Panel as presently constituted, this Panel, in determining the Complaint, will take into account arguments made by Respondent Domains by Proxy, Inc. made on its own behalf and on behalf of its customers and will consider materials submitted by those customers directly.

The reasoning for this Order is discussed in the body of the decision below. 

On December 17, 2009, the National Arbitration Forum received Complainant’s Third Amended Complaint naming Respondent as Domains By Proxy, Inc. by itself and as proxy for its customers.

On December 22, 2008, a Notification of Complaint and Re-Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 12, 2009, by which Responses could be filed to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.

On January 12, 2009, Domains By Proxy, Inc. requested, and Complainant stipulated to, an Extension of three days in the response time, with a new deadline of January 15, 2009, which was granted.

On January 13, 2008, a second response was received from Herbert Kraft, one of DBP’s customers, and determined to be late.

On January 15, 2009, a Response was received from DBP and determined to be complete.  In its Response, DBP did not object to the Panel as presently constituted.

On January 16, 2009, a timely Additional Submission was received from Complainant and determined to be complete.

Due to the minor deficiencies and the complicated nature of this case, the Panel has determined to accept the responses from DBP’s customers, filed in response to Complainant’s Second Amended Complaint.  Included in that group was a response from Herbert Kraft.  Mr. Kraft’s late second response dated January 13, 2008, will not be considered.  Due to the complicated nature of this case, the Panel has determined to accept the second Additional Submission from Complainant dated November 13, 2008.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant. Since the domain names in dispute have been registered in the names of DBP’s customers since the Complaint was initiated, and subsequently locked, the Panel takes this as a request that the domain names be transferred from their current registrants to Complainant.

PRELIMINARY PROCEDURAL ISSUE:  IS THE PRIVACY SERVICE THE PROPER RESPONDENT?

 

            BACKGROUND PROVISIONS

 

Paragraph 8(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (the “Policy”) states:

8. Transfers During a Dispute.

a. Transfers of a Domain Name to a New Holder.

You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator.  We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph. 

 

Paragraph 1(d) of the Definitions section of the National Arbitration Forum’s Supplemental Rules provides:

“The Holder of a Domain Name Registration,” as used in The Rules (Rule 1), means the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum; and once the registrar has verified registration, is limited to the single person or entity as verified by the registrar. 

 

COMPLAINANT’S ARGUMENTS

Complainant primarily argues that DBP seeks to avoid the obligations imposed by the ICANN Registrar Accreditation Agreement, which requires registrars to maintain accurate WHOIS information, including the name and postal address of the holders of all registered domain names.  Complainant notes that DBP typically transfers the domain name to the concealed registrant once a UDRP complaint is filed, and cites prior UDRP panel decisions deeming such transfers to be contrary to UDRP Policy.

DBP’S ARGUMENTS

 

In addition to giving legitimate reasons for providing privacy services to the industry, DBP argues that UDRP Policy language does not preclude its practice of transferring domain names to its customers once a UDRP complaint is filed, as follows:

1.      Paragraph 8(a) of the ICANN Policy allows for transfer before “commencement” of a proceeding; commencement means when the administrative body formally commences a case and does not mean when a complaint is filed.

2.      Paragraph 8(a) (ii) also allows for transfer during a pending proceeding to domain name holders who agree in writing to be bound by the decision of the court or arbitrator. Customers agree in their registration and proxy agreements to be bound by the ICANN Policy.

3.      NAF Supplemental Rule 1(d) defines the registrant by reference to the person or entity verified by the Registrar.

Respondent also cites prior panel decisions for its position, in particular Karsten Manufacturing Corp. v. Pingify Networks Inc., FA 1232823 (January 5, 2009) which took the “pragmatic view that if the identity of the beneficial owner of the domain name is known, can be readily identified, or is revealed by the registrar in response to a complaint, then it should be the named respondent and the case under the Policy should be made against that party.”

 

THE PANEL’S FINDING

 

First, the Panel makes no finding regarding the legitimacy of privacy services, but limits itself to a reading of the applicable Policy and Rules.  As the Panel articulated in its Interim Order, the Panel does not believe DBP has the right to transfer domain names to its customers after a UDRP Complaint is filed, as the Policy and Rules are currently written.

NAF Supplemental Rule 1(d)

The Panel relies on the words “at the time of the filing of the Complaint with the Forum” to determine the domain name holder and Respondent.  These words are unequivocal. 

The remainder of that clause states “and once the registrar has verified registration, is limited to the single person or entity as verified by the registrar.”  This means that there cannot be multiple registrants or respondents in one UDRP case; the language does not qualify the definition of the “holder” of the domain name, namely the entity listed “at the time of the filing of the Complaint.”

Paragraph 8(a) of the UDRP

The Panel relies on the words in sub-paragraph (i): “You may not transfer …during a pending administrative proceeding.”  UDRP domain name proceedings are administrative proceedings.  They are not court proceedings.  They are not arbitrations.  The only sensible interpretation of sub-paragraph 8(a)(i) is that they cannot be proceedings of the kind to which sub-paragraph (ii) applies.  Therefore, the provisions contained in DBP’s agreements with its customers do not function to afford domain name holders the benefit of the proviso contained in sub-paragraph 8(a)(ii), which says you may not transfer “(ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator.”

The Panel acknowledges that DBP’s customers agreed to be bound by the UDRP.  The Panel also acknowledges that DBP puts its customers on notice that their domain names will revert back to them in the case of an administrative proceeding.  However, the UDRP simply doesn’t allow for that. 

The prohibition against transfer during the UDRP proceeding was aimed at preventing cyberflying and did not anticipate the advent of privacy services.  Notwithstanding the “pragmatic view,” until the Policy and the Rules are changed, the current Policy and Rules must be interpreted in accordance with the natural and ordinary meaning of their provisions.

COMPLAINANT’S CONTENTIONS AGAINST CURRENT DOMAIN NAME HOLDERS

1.       All of the disputed domain names are confusingly similar to Complainant’s AAA mark.

2.      The holders of the disputed domain names do not have any rights or legitimate interests in the domain names.

3.      The disputed domain names were registered and are being used in bad faith.

 

RESPONSES

 

1.      In its Response, on the subject of the three required elements, DBP contends that it is not possible to prove bad faith registration and use on its part because it merely collects flat fees from its users.

2.      No correspondence was received from the holders of the following domain names:

<aaa-automotivewarrantydeals.com>¸<aaa-travel-international.biz>, <aaa-travel-international.info>, <aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>, <aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaaluxurytravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>, <aaapenguintravel.com>, <aaaprovedautorepair.com>[1], <aaarecoveryservices.com>, <aaareferraltraveltours.net>, <aaatourguide.com>, <aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaawebservices.net>, <tripleaatm.com>, <tripleamagazine.com>, <wwwaaa-warranty.com>, and <wwwaaawarranty.com>.

3.      Correspondence containing a consent to transfer was received by the holders of the following domain names:

<aaacredit4u.com>, <aaapremiercreditrepair.biz>, <aaapremiercreditrepair.org>, <aaatravelfare.com>, <onlinetriplea.com>, <triple-a-agency.com>, <triple-a-tracker.com>, <tripleatracker.com>, and <triplearaids.com>.

4.      Substantive Correspondence:

a.       The holder of <aaacorporatetravelsolutions.com>, <aaacorporatetravelsolutions.net>, and <aaacorporatetravelsolutions.org> contends that he purchased the domain names from a legitimate domain broker for future use.

b.      The holder of <aaaexchangenetwork.com> contends that the domain name is not confusingly similar to Complainant’s marks, and that it is preparing to use the domain to offer exchange services in the timeshare industry.

c.       The holder of <aaavinsurance.com> contends that this domain has never been used, but that he intends to use it as a vertical insurance directory.  The holder further states that he chose the domain “purely with an eye towards alphabetical order.”

d.      The holder of <tripleamexico.com> and <tripleamexico.net> contends that he purchased the <tripleamexico.com> domain name for the purpose of creating either an official site or a fan site for a wrestling organization called Asistencia Asesoira y Administracion, and points out other uses of AAA.  The holder does not mention <tripleamexico.net>.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

FINDINGS

Complainant owns the AAA mark (Reg. No. 703,556 issued Aug. 30, 1960) and the TRIPLE-A mark (Reg. No. 1,168,790 issued Sept. 8, 1981), both of which were registered with the United States Patent and Trademark Office (“USPTO”).  The Panel therefore finds that Complainant has sufficient rights in its marks under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant’s trademarks have been filed for various classes, including a host of insurance services, travel services, financial services, and automobile services.  The disputed domain names are confusingly similar to its AAA and TRIPLE-A marks, in that each of the disputed domain names contains one of the marks along with generic or descriptive terms, hyphens, and generic top-level domains.  The Panel finds, as many previous UDRP panels have found, that additions of generic words, particularly words that describe a complainant’s business, to a complainant’s marks do not sufficiently disintinguish the disputed domain names under Policy ¶ 4(a)(i).  See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to the complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).  The Panel finds that the addition of hyphens and top-level domains does not sufficiently distinguish the domain names from the corresponding trademarks under Policy ¶ 4(a)(i).  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

 

While various domain name holders in this case contend that the disputed domain names are comprised of common, descriptive terms, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i); this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i) for all of the disputed domain names.

The remaining elements under Paragraph 4(a) of the Policy are discussed below.

Regarding DBP’s Response and the Domain Names Not Specifically Responded To

First and foremost, the Panel defers to any available direct correspondence from DBP’s customers and addresses it below.  Presumably, in attempting to transfer the domain names to its customers and arguing that its customers should be able to respond to complaints, DBP also defers to their specific arguments.

As to those domain names not specifically responded to by a DBP customer, the Panel finds that it is entitled to accept Complainant’s assertion that the customers have no legitimate rights or interests since neither they nor DBP addressed that point.  As for bad faith, the Panel finds bad faith registration and use in that the domain names all contain one of Complainant’s well-known marks and redirect Internet traffic to Complainant’s competitors.[2]

However, in this case, the Panel declines to find bad faith on the basis of mere use of a privacy service.

 

Regarding the Domain Names with Consent to Transfer

 

Where there is consent to transfer the Panel orders transfer without considering the substantive issues, in line with voluminous UDRP decisions on that point.

 

Regarding <aaacorporatetravelsolutions.com>, <aaacorporatetravelsolutions.net>, and <aaacorporatetravelsolutions.org>

 

The Panel finds that the holder, Dennis Rochford, does not conduct any business under this domain and is not commonly known by the domain name, and therefore has not shown any rights or legitimate interests in the domain name.  Further, the Panel finds that Rochford knew of Complainant’s trademark in AAA, particularly well-known in the travel industry, and therefore registered and used the domain name in bad faith.  The Panel finds that Rochford intended to capitalize on the likelihood of confusion by diverting travel business to his website.

 

Regarding <AAAexchangenetwork.com>

 

The holder of this domain name, Parmamagoo Media, LLC, claims that it is preparing to use the domain to provide exchange services in the timeshare industry.  While Complainant uses its AAA mark in the travel industry, the Panel finds that the words “exchange network” are not by themselves indicative of any particular service or industry.  The Panel does not believe that Complainant can control every possible use of its marks; it is limited to the class restrictions in its registrations.  Therefore, it is possbile for Parmamagoo to have a legitimate interest in the domain name.  The Panel finds that Complainant did not meet its burden of proof as to the second required element of Policy ¶ 4(a).

 

Regarding <aaavinsurance.com>

 

The Panel finds Complainant’s assertions establish a prima facie case of absence of rights or legitimate interests.  Shane Johnson does not conduct any business under this domain name and is not commonly known by the domain name, and therefore has not shown any rights or legitimate interests in the domain name.  Further, the Panel finds that Johnson knew of Complainant’s trademark in AAA, particularly well-known in the insurance industry, and therefore registered and used the domain name in bad faith.  Specifically, there is a glaring likelihood of confusing the public.  The Panel finds that Johnson intended to capitalize on that confusion by diverting insurance business to its website.

 

Regarding <tripleamexico.com> and <tripleamexico.net>

 

The Panel finds Complainant’s assertions establish a prima facie case of absence of rights or legitimate interests.  The holder of these domain names, Herbert Kraft, has not shown any connection to the Mexican wrestling organization Asistencia Asesoira y Administracion.  He also did not provide a shred of evidence to back up the claim of intended use in connection with the wrestling organization.  The domain name currently resolves to a Domains Priced Right parking page containing links to Complainant and its competitors, with no mention of wrestling, an indication of bad faith.  The Panel therefore finds that the requirements of the Policy are satisfied with regard to these domain names.

DECISION

With respect to the domain <AAAexchangenetwork.com>, Complainant having failed to establish all three elements required under the ICANN Policy, it is Ordered that the Complaint be DISMISSED.

 

Since the holders of the following domain names have consented to transfer, it is Ordered that the <aaacredit4u.com>, <aaapremiercreditrepair.biz>, <aaapremiercreditrepair.org>, <aaatravelfare.com>, <onlinetriplea.com>, <triple-a-agency.com>, <triple-a-tracker.com>, <tripleatracker.com> and <triplearaids.com> domain names be TRANSFERRED to Complainant.

With respect to the following domain names, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <aaa-automotivewarrantydeals.com>¸<aaa-travel-international.biz>, <aaa-travel-international.info>, <aaaamobilefleetservice.com>, <aaaautopartslocators.com>, <aaabizcredit.com>, <aaaccuratecredit.com>, <aaacetravel.com>, <aaacetravel.info>, <aaacetravel.net>, <aaacorporatetravelsolutions.com>, <aaacorporatetravelsolutions.net>, <aaacorporatetravelsolutions.org>, <aaacreditforyou.com>, <aaadiscountss.com>, <aaadiscountss.net>, <aaafinancialfreedom.com>, <aaafreetravel.com>, <aaaluxurytravel.com>, <aaanationalfinance.com>, <aaanationalfinancesolutions.com>, <aaapenguintravel.com><aaaprovedautorepair.com>, <aaarecoveryservices.com>, <aaareferraltraveltours.net>, <aaatourguide.com>, <aaatourguide.net>, <aaatourguides.com>, <aaatourguides.net>, <aaatourvideos.com>, <aaatourvideos.net>, <aaatransferservices.com>, <aaatravelguide.net>, <aaatravelguides.com>, <aaatravelguides.net>, <aaatravelperks.net>, <aaatravelsmooth.com>, <aaatravelvideos.net>, <aaavinsurance.com>, <aaawebservices.net><tripleaatm.com>, <tripleamagazine.com>, <tripleamexico.com>, <tripleamexico.net>, <wwwaaa-warranty.com> and <wwwaaawarranty.com> domain names be TRANSFERRED to Complainant.

 

Alan L. Limbury, Panelist

David E. Sorkin, Panelist

Sandra J. Franklin, Panelist and Chairperson


Dated:  January 30, 2009

 

 

[1] Though Complainant addressed this domain name and specifically responded to correspondence from the domain name holder, apparently upon the belief that this correspondence had been filed with the Forum, neither the Forum nor the Panelists were given a copy of any such correspondence.  One member of the Panel would have specifically asked the holder for its correspondence, or in the alternative would deny relief under the Policy based solely upon the responsive evidence provided by Complainant, on the ground that the dispute is primarily contractual in nature.  A majority of the Panel, however, holds that there is no response in this case, bearing in mind that the holder is not even a party to this proceeding.

[2] One member of the Panel would specifically find bad faith registration against DBP in the cases where DBP was put on notice of Complainant’s trademarks prior to registering a confusingly similar domain name.

 

 

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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. HostMonster Inc. d/b/a Hostmonster.com

Case No. D2006-1421

1. The Parties

The Complainant is Principal Financial Services, Inc., Des Moines, Iowa, United States of America, represented by Neal & McDevitt, United States of America.

The Respondent is HostMonster Inc. d/b/a, HostMonster.com, Orem, Utah, United States of America.

2. The Domain Name and Registrar

The disputed domain name <principle-financial.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 7, 2006. On November 9, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 9, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2006.

The Center appointed Jeffrey M. Samuels as the Sole Panelist in this matter on December 11, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Principal Financial Services, Inc. is a publicly traded multi-national financial services institution. Since at least as early as 1985, Complainant has offered, through its licensees, member companies and affiliates, a broad range of services in the financial, insurance, investment, banking, retirement, real estate, and health care sectors, among others.

Complainant owns a number of U.S. trademark registrations for marks that include, in whole or in part, the term PRINCIPAL. These registrations include U.S. Reg. 1,740,181 for the mark THE PRINCIPAL, as used in connection with commercial and residential real estate services, and U.S. Reg. No. 1,740,172 for the mark THE PRINCIPAL FINANCIAL GROUP, which also is used in connection with commercial and residential real estate services. The Complainant also owns the domain names <principal.com> and <principalfinancial.com>.

The disputed domain name <principle-financial.com> was registered by Respondent on October 7, 2006. The Respondent operates an Internet website at the address that purports to offer loan services to individuals with credit challenges.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name is confusingly similar to Complainant’s family of PRINCIPAL marks, as well as its registration for the domain name <principalfinancial.com>, because it incorporates the famous PRINCIPAL and PRINCIPAL FINANCIAL marks and because it is being used in connection with the sale of consumer loan services. Complainant further maintains that its marks and the domain name <principle-financial.com> are aurally identical and nearly indistinguishable from a visual perspective.

Complainant contends that Respondent has no rights or legitimate interests in the domain name. It points out that it has used, and has indisputably established enforceable rights in and to, its family of PRINCIPAL trademarks since long prior to Respondent’s registration of the disputed domain name. Moreover, Complainant asserts, it has never given Respondent permission to register and/or use the disputed domain name and Respondent is not a licensee of Complainant.

Finally, Complainant urges that the disputed domain name <principle-financial.com> was registered and is being used in bad faith. According to Complainant, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well-established family of PRINCIPAL marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or a product or service on Respondent’s site.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <principle-financial.com> is confusingly similar to Complainant’s marks. The domain name is similar in appearance and pronunciation to Complainant’s PRINCIPAL FINANCIAL mark. A respondent cannot avoid a finding of confusing similarity by making minor alterations to a mark. See, e.g., Citigroup Inc. and Citicorp v. Phayze Inc., WIPO Case No. D2003-0430 (<citiback.com> held confusingly similar to CITIBANK mark); Pfizer, Inc. v. Phizer Antiques and Robert Phizer, WIPO Case No. D2002-0410 (<phizer.com> held confusingly similar to PFIZER mark).

The disputed domain name also is confusingly similar to Complainant’s PRINCIPAL mark. The addition of the descriptive term “financial” in Respondent’s domain name is insufficient to avoid a finding of confusing similarity.

It is also clear that Complainant has rights in the marks PRINCIPAL and PRINCIPAL FINANCIAL, among others. As noted above, these marks are the subject of U.S. trademark registrations and have been in use for many years.

B. Rights or Legitimate Interests

The Panel finds that Complainant has established that none of the circumstances set forth in paragraph 4(c) of the Policy with respect to the establishment of rights or legitimate interests in the domain name is applicable. Given its earlier finding that the domain name and marks are confusingly similar, the Panel concludes that Respondent is not using the domain name in connection with a bona fide offering of goods or services. There also is no evidence that Respondent is commonly known by the domain name or is using the domain name in a noncommercial or fair manner.

C. Registered and Used in Bad Faith

The evidence establishes not only that the disputed domain name is confusingly similar to Complainant’s marks but also that Respondent offers at its website services that overlap with those offered by Complainant under its PRINCIPAL marks. As a result, the Panel holds that the disputed domain name was registered and is being used in bad faith.

The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s PRINCIPAL marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or a product or service on Respondent’s site, within the meaning of paragraph 4(b)(i) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <principle-financial.com> be transferred to the Complainant.

 

 

Jeffrey M. Samuels
Sole Panelist

Dated: December 25, 2006

 

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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Countrywide Financial Corporation, Inc. v. Aziz Popal

Case No. D2005-0295

1. The Parties

The Complainant is Countrywide Financial Corporation, Inc., Calabasas, California, United States of America, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.

The Respondent is Aziz Popal, Irvine, California, United States of America, who is representing himself in this proceeding.

2. The Domain Name and Registrar

The disputed domain name <countrywidefinancial.com> (“the Domain Name”) is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2005. On March 23, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On March 23, 3005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response April 21, 2005. The Response was filed with the Center on April 20, 2005.

The Center appointed W. Scott Blackmer, Kenneth A. Genoni and André R. Bertrand as panelists in this matter on June 1, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant transmitted a “Supplemental Submission” to the Center on May 11, 2005, addressing several factual points asserted in the Response. Respondent sent the Center an email the following day, May 12, 2005, making further arguments and factual statements and attaching copies of emails exchanged by the parties in 2002. Bearing in mind that the Respondent is an individual representing himself, the Panel admits both the Complainant’s and Respondent’s communications as Supplemental Submissions and has considered them in rendering a decision in this proceeding.

4. Factual Background

It is undisputed that the Complainant Countrywide Financial Corporation is a financial services company organized under the laws of the State of Delaware and headquartered in Calabasas, California. The Complainant operates nationally through several subsidiaries and is listed on the New York Stock Exchange.

The Complainant’s website at “www.mycountrywide.com” currently advertises “home loans”, “banking”, and “insurance”. The Complaint lists several other financial services offered by Complainant’s group of companies, including securities and commodities brokerage and underwriting services, mutual fund brokerage, financial portfolio asset management, investment advisory services, financial planning and research services, and loan financing.

Complainant Countrywide Financial Corporation is the successor to Countrywide Credit Industries, Inc., which was established in 1969. According to a corporate press release and Form 8-K filing with the United States Securities and Exchange Commission (both attached to the Response and not contested by the Complainant), the Complainant “changed its name” to Countrywide Financial Corporation in November 2002. The name change, according to the press release, reflected the company’s transformation from a leader in “mortgage banking” into a “diversified financial services” company.

On August 5, 2002, some three months before announcing the name change, the Complainant applied to the United States Patent and Trademark Office (“USPTO”) to register the word mark COUNTRYWIDE FINANCIAL for a list of financial services similar to those mentioned above. The mark was registered on November 16, 2004, showing November 13, 2002, as the date of first use in commerce.

The Complainant does not contend that it used the COUNTRYWIDE FINANCIAL mark before November 2002. However, it is undisputed that the Complainant also owns several COUNTRYWIDE marks used by its predecessor Countrywide Credit Industries, Inc. since “at least as early as October of 1983” (Complainant’s Supplemental Submission, at 3). USPTO records show that Countrywide Credit Industries, Inc. obtained registrations for COUNTRYWIDE marks in 1987, 1993, and 1995, associated with mortgage, securities, and insurance services. These registrations indicate, in the case of the COUNTRYWIDE marks registered in 1987 and 1993, a first use in commerce dating from October 1983. The Complainant also asserts “earlier common law rights” in COUNTRYWIDE as a service mark under state and federal law, although it does not provide further details concerning this claim.

The Panel has much less information about the Respondent Aziz Popal. The Respondent states in his Supplemental Submission that “under a different company name” he is currently involved in offering “equipment financing services to small and medium sizes [sic] business”. He mentions in his Response that in addition to registering the Domain Name, he has registered <click4loan.com>, <clickforloan.com>, and <citycapitalfinancial.com>. The Response says that the Respondent is not currently using the <citycapitalfinancial.com> domain name. As discussed further below, that name resolves to what is sometimes termed a “parking” site operated by the same Registrar that registered the Domain Name. The Domain Name resolves to the same site, displaying the address “www.citycapitalfinancial.com”.

The Respondent registered the Domain Name on March 28, 2001. The date is significant in that it precedes the Complainant’s name change and the first use of the COUNTRYWIDE FINANCIAL mark in November 2002. It is undisputed, however, that the COUNTRYWIDE mark was registered and well-established by that time.

The Respondent states in his Response that “I did not register this domain name to sell it to anyone or to profit from the domain name itself”. He asserts that other companies have offered to purchase the Domain Name “for traffic or generate leads but I refused to sell”. The Respondent denies being a “domain broker” and points out that he did not solicit an offer for the Domain Name from the Complainant or its predecessor. (As discussed below, the Complainant acknowledges having made the first contact with the Respondent.)

In his Supplemental Submission, the Respondent repeats that he “was not interested in selling the domain” and was not using the Domain Name “for origination of mortgages or real estate transaction”. Instead, he asserts that his intention in registering the Domain Name was “to use the name in nationwide lending services, which include business equipment financing, receivable financing, inventory financing and factoring”. The Supplemental Submission says that the Respondent’s current business entails equipment financing for small businesses and goes on to indicate that “we will be offering receivable financing and auto loans in the near future”. The Respondent’s Supplemental Submission asserts that these services “are not offered by Countrywide”, a contention that the Complainant has not disputed (although it currently advertises “personal loans” online through its subsidiary Countrywide Bank).

It appears from the statements of the parties that the Domain Name has not been used for a website operated by the Respondent. Instead, it resolves to a page headed “Coming Soon!” that is hosted by the Registrar, Register.com, at the Respondent’s other “parked” address, “www.citycapitalfinancial.com”. The parking site includes links to a variety of commercial websites concerning travel, credit cards, student loans, and other services offered by third parties. It does not appear that the parking site at “www.citycapitalfinancial.com” links to the Respondent’s active websites. The Response denies that the Respondent has “benefited financially” by using the Domain Name to attract traffic to the “www.citycapitalfinancial.com” website and states categorically that he has received “zero compensation” from its host, Register.com.

A review of the other websites registered by the Respondent is helpful in understanding the Respondent’s business interests, although it does not appear that these sites are linked from the “www.citycapitalfinaical.com” website to which the Domain Name resolves. The domain name <click4loan.com> resolves to a multi-page website headed “City Capital Financial, Inc.”, showing a business address on Main Street in Irvine, California (not the same address in Irvine given for the Respondent as registrant of the Domain Name). The site advertises loan services (mortgages and cash loans) and provides online loan calculators and information, including links to other commercial websites offering various “home services” (such as construction and landscaping) and “personal finance resources” (such as insurance quotes and credit reports). The domain name <clickforloan.com> resolves to a website also labeled “City Capital Financial, Inc.”, at the same Main Street address in Irvine, California, advertising the same lending services and offering essentially the same related information, but entirely in the Spanish language. A link on the home page labeled “In English” takes site visitors to “www.click4loan.com”; a reciprocal link on the “www.click4loan.com” website brings Spanish-speakers to “www.clickforloan.com”.

It is undisputed that the Complainant contacted the Respondent in the summer of 2002 (before the Complainant’s name change and its application to register the COUNTRYWIDE FINANCIAL mark), seeking the transfer of the Domain Name. According to the Complainant’s Supplemental Submission, it first sought to have the Respondent transfer the Domain Name “because it did not properly belong to him”, offering to pay the Respondent’s registration costs “plus a nominal amount”.

Neither party has furnished the Center a complete chronology and description of the various telephone and email communications that followed. However, a series of emails attached to Respondent’s Supplemental Submission and dated in July 2002 (shortly before the Complainant applied for the registration of the COUNTRYWIDE FINANCIAL mark) indicate that at some point the Complainant offered money for the Domain Name and the Respondent replied (on July 18, 2005) that he was “not interested in selling” the Domain Name, adding, “as you know I am not advertising under countrywide financial, and I do not claim to be, countrywide”. The Complainant responded in a July 29, 2002 email, saying that “our initial offer was too low” and offering $10,000 for the Domain Name. The Respondent replied by email that he would consider leasing the Domain Name to the Complainant. The Complainant’s representative responded that this was a “good suggestion” but would not make sense for the Complainant “since we are not planning on using it immediately”. The Complainant’s representative asked the Respondent in an email dated July 30, 2005, what amount would “persuade” him to sell the Domain Name, since “you may have a chance of getting your required amount if it is reasonable”.

The parties agree that at some point the Respondent asked for $250,000 to transfer the Domain Name (this is acknowledged in the Response) and engaged in at least one telephone conversation that involved legal counsel for the Complainant. The Complainant’s Supplemental Submission asserts (without contradiction from the Respondent) that the Respondent lowered his selling price to $60,000 and then to $10,000, which is the amount that the Complainant offered on July 29, 2002. However, no agreement was reached and there is no record of communications between the parties after September 2002, until the Complainant served notice of this proceeding some two and a half years later.

5. Parties’ Contentions

A. Complainant

The Complainant points to its “longstanding and continuous usage” of the COUNTRYWIDE “family of service marks”, widely identified with the Complainant and its financial services. The Complainant acknowledges in its Supplemental Submission that the Respondent registered the Domain Name before the Complainant changed its name to Countrywide Financial, but the Complainant argues that this is irrelevant because the COUNTRYWIDE marks were already well established. The Complainant contends that the COUNTRYWIDE marks are arbitrary and distinctive rather than descriptive and asserts that the Complainant has expended hundreds of millions of dollars in advertising the COUNTRYWIDE marks since introducing them in 1983 “in association with its mortgage home loan services, mortgage lending and financing, and other real-estate related services”. Alternatively, the Complainant argues that even if the marks were viewed as descriptive, they have acquired “substantial secondary meaning” in the past two decades, making them “distinctive and subject to protection”.

The Complainant asserts that the Domain Name is identical to its COUNTRYWIDE FINANCIAL and COUNTRYWIDE marks and that “[a]t a minimum, there is confusing similarity”. In its Supplemental Submission, the Complainant argues that the addition of the descriptive word “financial” to the COUNTRYWIDE mark in the Domain Name does not avoid likely confusion with the COUNTRYWIDE marks, especially because it is descriptive of the very services that the Complainant offers in association with the COUNTRYWIDE marks.

The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant has not licensed the Respondent to use its COUNTRYWIDE or COUNTRYWIDE FINANCIAL marks. Further, the Complainant argues, the Respondent is using the Domain Name for an “illegitimate purpose” by diverting traffic from the Complainant’s website to the “www.citycapitalfinancial.com” website hosted by Register.com and from there to unrelated commercial websites (some of them competing with the Complainant). The Respondent, the Complaint continues, is not using a Domain Name by which the Respondent has been known in connection with a bona fide offering of goods or services. In its Supplemental Submission, the Complainant argues that “[e]ven in his Response, Respondent does not state a single legitimate reason for his registration of the domain name in the first place”.

The Complainant concludes that the Domain Name was registered and used in bad faith, on several grounds. The Complainant argues that using a Domain Name that is identical or confusingly similar to the Complainant’s marks to divert consumers to commercial websites operated by others falls within paragraph 4(b)(iv) of the Policy. The Complainant argues further that the Respondent’s demand for $250,000 to transfer the Domain Name is evidence of bad faith under paragraph 4(b)(i) of the Policy. Finally, the Complainant argues that the Respondent has disrupted the Complainant’s business by preventing it from reflecting its COUNTRYWIDE FINANCIAL and COUNTRYWIDE service marks in a corresponding domain name. (This last argument appears to be a conflation of paragraphs 4(b)(ii) and (iii) of the Policy.)

Accordingly, the Complainant seeks the transfer of the Domain Name.

B. Respondent

The Respondent points out that the Complainant changed its name from Countrywide Credit Industries, Inc. to Countrywide Financial Corporation, Inc. twenty months after the Respondent registered the Domain Name, and did not previously do business under that name.

In his Supplemental Submission, the Respondent suggests that “countrywide” is a descriptive term and characterizes the “nationwide” scope of the financial services business that the Respondent intended to offer using the Domain Name. He also indicates in the Supplemental Submission that he planned to use the Domain Name for financial services that are not offered by the Complainant.

Further, the Respondent denies registering the Domain Name with intent to sell it to the Complainant and claims he has turned away offers for the Domain Name from third parties. He also denies receiving any compensation from Register.com while parking the Domain Name with that company.

In short, the Respondent makes an argument against confusing similarity and claims a legitimate interest in the Domain Name and a good-faith reason for registering it.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Apart from the lack of a space between “countrywide” and “financial”, the Domain Name is identical to the Complainant’s registered mark COUNTRYWIDE FINANCIAL. The missing space does not lessen the likelihood of confusion. It is common to omit spaces in multi-word domain names, since the domain name service (DNS) technical protocols do not permit the use of spaces. See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (September 23, 2001) <digitalvision.com>.

It is undisputed that the Complainant applied to the USPTO to register the COUNTRYWIDE FINANCIAL mark in August 2002, first used the mark in November 2002, and obtained registration of the mark in November 2004 – all after the Respondent registered the Domain Name. However, paragraph 4(a)(i) of the Policy does not refer in any way to the timing of the Complainant’s acquisition of rights in a trademark or service mark, except to require that the Complainant have such rights at the time of the proceeding. This Panel follows previous ones in holding that the Complainant’s acquisition of rights in a mark after the Respondent’s registration of the Domain Name does not prevent a finding of identity or confusing similarity under paragraph 4(a)(i) of the Policy. It is, rather, a fact that may be relevant to the issue of bad-faith registration under paragraph 4(a)(iii) of the Policy, as discussed below. See AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527 (October 2, 2003) <svenskaspel.com>; Iogen Corporation v. Iogen, WIPO Case No. D2003-0544 (September 7, 2003) <iogen.com>; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 (October 8, 2003) <madrid2012.com> (and other domain names); Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (September 23, 2001) <digitalvision.com>.

The Panel concludes, therefore, that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i), because the Domain Name is identical or confusingly similar to the Complainant’s COUNTRYWIDE FINANCIAL mark. Confusing similarity is a more contentious question with respect to the COUNTRYWIDE marks, but it is unnecessary to address that question because of the Panel’s ruling based on the COUNTRYWIDE FINANCIAL mark.

B. Rights or Legitimate Interests

The Respondent’s Supplemental Submission indicates that “countrywidefinancial” describes what the Respondent plans to offer – “nationwide lending services”. The Respondent currently offers some lending services and asserts plans to offer more, although these are not provided under a name corresponding to the Domain Name.

There is no evidence in the record that the Respondent has ever been commonly known by the Domain Name or has acquired relevant trademarks or service marks, and it is undisputed that the Respondent has not been licensed by the Complainant. Thus, it appears that the Respondent is asserting a legitimate interest in the Domain Name on the ground described in paragraph 4(c)(i) of the Policy:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services . . . .”

Whether the Panel should conclude that the Respondent made “demonstrable preparations” to use the Domain Name in connection with a bona fide offering of goods and services – rather than merely to divert Internet users to other commercial sites and demand exorbitant sums from the Complainant, as the Complainant contends – is a question that is intertwined with the issue of bad faith under the third element of the Policy. The Panel will address the Respondent’s claims of legitimate interests in the Domain Name in the discussion of bad faith below, since the aim of the Policy is to stop bad-faith registration of domain names and that is the heart of this proceeding and of most UDRP proceedings. Because the Panel concludes below that the Complainant has not met its burden of persuasion on the issue of bad faith, it is not necessary to draw a conclusion as to Respondent’s having legitimate interests in the Domain Name under the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), places the burden of proof on the Complainant to establish both that the Domain Name “has been registered” in bad faith and “is being used” in bad faith. As discussed below, the fundamental difficulty for the Complainant in the current proceeding is to meet its burden of persuasion in discrediting the Respondent’s avowed good-faith reasons for registering the Domain Name.

If there were no possible legitimate, non-infringing uses of the Domain Name at the time it was registered by the Respondent, the Panel could more easily infer bad faith (as well as a lack of rights or legitimate interests in the Domain Name). But that does not appear to be the case here. The Complainant did not use the COUNTRYWIDE FINANCIAL mark until after the Domain Name was registered. The COUNTRYWIDE marks were long established, but by the Complainant’s own account they were originally associated with a more limited range of financial services. The Complainant does not provide evidence that these marks were associated, by the time the Domain Name was registered, with all of the financial services the Respondent mentions in his Supplemental Submission.

The Complainant claims that the COUNTRYWIDE mark is distinctive rather than descriptive and therefore should be protected against any use by the Respondent. It is, however, a common English word with relevant geographic significance, and the Complainant has not demonstrated that the mark has acquired a secondary meaning associated with all relevant financial services.

Thus, it has not been established that the Respondent simply could not have entertained any legitimate, non-infringing uses of the Domain Name in 2001, whatever the case may be today.

As the Complainant points out, the Response does not indicate why the Domain Name was chosen. However, the Respondent’s Supplemental Submission addresses the issue. There, the Respondent indicates that “countrywidefinancial” described what was intended to be a business offering “nationwide lending services”. “Statewide or Countrywide lending”, argues the Respondent, “is a general word used to describe our ability to provide financial services throughout the country”. The Supplemental Response also lists several financial services offered or contemplated by the Respondent, which allegedly “are not offered by Countrywide”.

It is a close question whether this explanation of the Respondent’s purpose in registering the Domain Name is persuasive. To date, it appears that Respondent has not achieved his alleged ambition of offering nationwide lending services, under the Domain Name or any other. The Domain Name has apparently never been used for a financial services website operated by the Respondent. The home mortgage and personal loan services offered by City Capital Financial, Inc. at the Respondent’s website “click4loan.com” do not quite match the description of his current financial offerings in the Supplemental Response and are certainly not national in scope: the home page includes the disclosure, “We lend in the following states: California”.

Moreover, the Respondent does not deny familiarity with the Complainant’s predecessor, Countrywide Credit Industries, Inc., which held, at the time of the Domain Name registration, several long-established marks using the word COUNTRYWIDE in association with certain financial services. Thus, it is entirely possible that the Respondent registered the Domain Name in the hope of somehow capitalizing on the fame of the COUNTRYWIDE mark, either by selling the Domain Name or by diverting traffic to a website operated by the Respondent or another party for commercial gain.

But it also appears, from his websites as well as his claims in this proceeding, that the Respondent does indeed operate a financial services business in California. It is not incredible that the Respondent would hope to expand this business nationally – or “countrywide”. It is undisputed that the Respondent did not approach the Complainant about selling the Domain Name, and the Respondent says he rejected offers from others. This is at least a plausible version of the events that suggests innocent motives in registering the Domain Name.

Each of the Respondent’s factual allegations could be tested in a judicial proceeding, of course. There, the advocates could pursue discovery from the parties and from other relevant persons. A judge or jury would have an opportunity to observe the witnesses in person and better assess their credibility.

By contrast, the Panel in a UDRP proceeding does not have the benefit of these mechanisms for divining the truth. Without them, a panel should not readily conclude that a respondent is lying about his reasons for registering a domain name, where the complainant has the burden of proving bad faith and the respondent has submitted a not unlikely explanation.

The Complainant argues that bad faith should be inferred from the Respondent’s use of the Domain Name, which is identical or confusingly similar to the Complainant’s marks, to divert consumers to commercial websites operated by others. The Complainant cites paragraph 4(b)(iv) of the Policy, which lists the following as one possible evidence of bad faith:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

There are two problems with the Complainant’s analysis.

First, paragraph 4(b)(iv) concerns diversion of Internet traffic “for commercial gain”. The Respondent here categorically denies receiving compensation for parking the Domain Name with Register.com, which displays what are apparently sponsored links to various commercial websites. Because none of the latter appear to be operated by the Respondent, and the Respondent claims to have received no compensation, the Panel cannot safely infer that the Respondent has used the Domain Name “for commercial gain” by creating a likelihood of confusion with the Complainant’s mark.

Second, where the Respondent has avowed a permissible purpose in registering the site, the Panel is reluctant to find bad-faith registration based on his subsequent parking of the Domain Name. As the Panel concluded in Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting, WIPO Case No. D2001-1391 (January 24, 2002) <sexplanets.com>, it is appropriate to infer bad-faith registration where bad-faith use as defined in paragraph 4(b)(iv) is the only evidence of the purpose for which the domain name was registered. By contrast, such an inference may not be appropriate where there is other evidence of the Respondent’s purpose in registering the Domain Name:

“Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith.”

(Quoting Passion Group Inc. v. Usearch, Inc. (eResolution case AF-0250).)

Thus, even if it could be established, contrary to his denials, that the Respondent obtained some form of compensation for parking the Domain Name with Register.com, it would not prove that this was his intention at the time of registration, where he has advanced plausible, good-faith reasons for registering the Domain Name.

The Complainant also argues that the Respondent’s demand for $250,000 to transfer the Domain Name is encompassed by paragraph 4(b)(i) of the Policy, which gives the following as an instance of bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name . . . .”

The amount here is certainly much more than the Respondent’s likely out-of-pocket costs, but the difficulty is in establishing that the Respondent registered the Domain Name “primarily” for the purpose of selling it to the Complainant or a competitor. From the record, it appears that the Respondent was in fact involved in a financial services business, did not approach the Complainant soliciting its purchase of the Domain Name, and expressed a disinclination to sell when the Complainant contacted the Respondent more than a year after the Domain Name was registered. The Respondent gives other reasons for registering the Domain Name and denies being a “domain broker”. There is no conflicting evidence, such as multiple domain name registrations or a history of UDRP complaints against the Respondent. His conduct in 2002 appears opportunistic, but it does not establish that the sale of the Domain Name was his primary purpose for registration in 2001, in the face of his stated reasons for obtaining the Domain Name.

Finally, the Complainant argues that the Respondent has disrupted the Complainant’s business by preventing it from reflecting its COUNTRYWIDE FINANCIAL and COUNTRYWIDE service marks in a corresponding domain name. Paragraph 4(b)(ii) of the Policy requires proof, however, that the Respondent has engaged in “a pattern of such conduct”, which is lacking here. Paragraph 4(b)(iii) refers more generally to bad-faith registration “primarily for the purpose of disrupting a competitor”. In light of the Respondent’s plausible reasons for registering the Domain Name – including the offering of services that do not appear to compete with those offered by the Complainant – it is not established that the Respondent’s primary purpose in registering the Domain Name was to disrupt the Complainant.

In sum, it may well be that the Respondent hoped at the time of registration for some ultimate sale of the Domain Name or a “free rider” effect in using the Domain Name, incorporating as it did the Complainant’s well-known COUNTRYWIDE mark. There is little evidence to support that inference, however, and the Respondent has advanced plausible, good-faith reasons for registering the Domain Name. The Panel is not inclined, on the available record, to conclude that those statements are untruthful.

The Panel notes that the parties are located in the same state, and the Complainant may choose to test the Respondent’s factual allegations in litigation, where there are more facilities for discovery as well as more legal grounds and remedies available. But in the narrow confines of a UDRP proceeding, the Panel concludes that the Complainant has not established bad-faith registration and use and therefore is not entitled to a transfer of the Domain Name <countrywidefinancial.com>.

7. Decision

For all the foregoing reasons, the Complaint is denied.

 

W. Scott Blackmer

Presiding Panelist

 

Kenneth A. Genoni 

Panelist

 

André R. Bertrand 

Panelist

Dated: June 15, 2005

 

 

Posted by on in Happening Now

 

Its 2013 and one would wonder why the heck is anybody writing an article to explain the importance of branding ones company or product and services online.

 

The truth of is that way too many business owners are mystified about "this online branding thing.". Chances are, if I asked you to write down the names of 5 restaurants you know, you would do great at it. But if I asked you to write down 5 websites of restaurants you know, chances are your list will look along these lines … redrobster.com, mcdonalds.com, bk.com, kfc.com, aw.com and any such big brands. But what if I asked you to do 5 local restaurant sites? Ghrrr; chances are you would do a terrible job at it. Now try ice cream shops, meat shops, auto repair shops and it gets complicated. I do this for a living but I couldn't do any better than you do.

 

But its not you or my fault. Most small businesses think the internet is way big for them and that its too costly to get online and somewhat, that could explain why small businesses aren't doing so well when it comes to branding themselves online. But truth be told its hard to do business now days without being online and frankly most of our businesses aren't offline altogether; wether you like it all not, your brand is some how represented online, on social sites such as twitter, Facebook, yelp.com e.t.c.

 

Unless you work for the military or some kind of an environment where secrecy is paramount, and NSA and some branches of the military do not pass this test. Someone is writing about you, your company products and services online without needing approval from you. Yes you read this right and let me elaborate on this. Every time you see a patient, serve a customer or roll your eyes when talking to customers, somebody else gets to know about. We tweet it, Facebook it,  and sometimes down right review you or make up stories about you and here "we" I use as a general term for public.

 

Here is a few facts. I found my current family doctor after reading about his practice online. Although I rarely eat out, I read about this noodle house in a friends tweet, the tooth brush I use was socially recommended so are my runners, my cargo pants and hair clippers (yes I cut my hair) 6 out of 8 times a year, but that is a different subject. 

 

Question is, are we doing a good job at representing your company and should you trust your livelihood to us to do the talking on your behalf? the answer is "it depends".

 

If you haven't kept us waiting despite our timely arrival for that medical appointment, for the guaranteed free auto brake-check appointment that takes hours to complete, for that $50 Oil change that ends up costing $140, there is possibly nothing but praises for you and your team online. 

 

But if you however operate much like the rest of us, with bottlenecks, with constraints; in human resources, capacity,  supply chain and sometimes in financing then you need to start thinking your branding strategy. If you have a larger competitor, a lot of competitors, you're king of the hill, you offer products with lots of substitutes; then you have no time to think at all. And let me explain why..

 

In competitive markets where goods are similar and substitutes a readily available, brand recognition can be the difference between being dominated or being dominant. A Tommy Hilfiger shirt isn't any different from a shirt you'd buy from the local discount store and in-fact, they might both have been made in Bangladesh, using law materials supplied by the same cooperatives. But what justifies the difference in price one might ask. The answer is simply the brand. You see, brands are powerful vehicles of value to both their consumers and their owners. Some brands give users a sense of importance, some really just meet basic needs and some simply out perform other comparable brands producing similar goods of the same category. And at the same time, well managed brands pay well to their owners.

 

The brands that out perform other brands want to stay on top. They want their message to continue to be heard and given the burden of legacy they carry, it should come as no surprise that these brands want  to continue to offer their customers the promised value proposition and so they will advertise, invest in public relations, have descriptive or memorable website names and manage public perception of their brand image. This then is the making of powerful brands. 

 

Apple don't just want to sell you a computer, they want it to meet and exceed your expectations. In other words, its not just the brand, it's the product and the experience one derives from its use.If I asked you in our first exercise to write down the websites of the most powerful brands, chances are apple.com would have made your list.

 

And then there is competitive markets; fast food restaurants, most services oriented offerings and any other industries that definitely require some kind of differentiation to compete in the market place; these businesses rely on doing some one thing really good for so many people or to specific segment of the population. Although these businesses carry the heavier burden of  and the amount of paying customers tell the strength of the value proposition. If you're still following, then you see why I think its imperative for the herein mentioned scopes of business to take ownership of their internet message.

 

While we as consumers can do the talking online for you; for better or worse, your responsibility is ultimately to ensure that you make best effort to offer powerful value propositons, create demand for your product and services and provide your customers with a positive experience of your brand. Your business needs to be remembered, loved, trusted and depended on. With a compelling offering and memorable website (geodomain such as .nyc domain names, .la domain names, .paris domain should help you do this), you're close. This is the value ebranding offers you and your business.

 

 

 

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Posted by on in Happening Now

 

So GeoTLD (geographic TLD) are here and so are opportunities and pitfalls for you to brand or mess up your brand. You see, unlike personal domain names, business domain names should be selected wisely. You want your domain name to convey in the easiest possible terms, the business or scope of activities your firm or operations offers to your customers, clients and prospective customers.

 

But its not always that easy to find that domain name that would do the trick. you see, the market for descriptive or memorable keyword domains great for branding products and services is finite and in most cases, supply and demand; like in everything commerce, determines that finite resources go to either the early adopters; or to the high valuing owners (HVO's) through rights exchange with early adopters.

 

This case is repeatedly shown given the prices of aftermarket domain names and the sales transactions that are completed. I am sure you've heard that sex.com sold for ~13 MM, Insure.com for $16 MM and mathgames.com for ~$700,000 and thousand of other domain names have sold or are selling for huge sums of money. In these cases, early owners are rewarded for taking risks and HVO's get what they want as well.

 

But not everyone is capable of competing in the high stakes game of being an early adopter as knowledge is key in this area and risk taking hard for most to contemplate. Not everyone can afford to play in the competitive secondary markets either,given the values associated to such rights exchange and so, by default, smaller companies play dominated strategies in the market place when it comes to competing in product promotions and product offering.

 

But geographical domains, especially local or city orientated domains kind of level the competitive field. With internet search engines evolving and fighting to win the local search market, owners of premium real estate in the geo domain space may be hard to ignore after all google and other search engine index and rank natural traffic based on relevancy, content and popularity.

 

So building ones marketing strategy on a website that is relevant, well designed and optimized must be a prescription for those looking to compete or even dominate their local traffic.

 

I see local small to medium business in a specific geolocation benefiting greatly from the new geolocation domains. Frankly, its the best possible way to get that premium domain that is gone or prohibitively expensive in the .com domains. For practical cases, a small or medium size miami muffler shop could easily change its competitive fortunes in both paid and organic search result by having a simple and memorable domain name that takes advantage of the new .miami tld such as muffler.miami.

 

It's not pipe dreams either to envision with the .la domain name, a small Los Angeles beer store owning www.beerstore.la, www.liquorstore.la or even www.beer.la at a small fraction of its .com equivalent. The same will apply to New York, Paris,  France, Tokyo and other major cities. 

 

Small and medium businesses will be able to say to their customers that "we are local and are here to last" and will be able to tailor their promotions and product offering to a target demographic that cares to listen. So both businesses and consumers of their products win. As a consumer, what is the value of finding relevant search results quickly and easily and for businesses, what value would you put to being the first in the minds of your potential customers?

 

Granted, their pitfalls. One could simply forget doing all the other things one needs to have a succesful online branding innitiative and reputation in reliance of a keyword rich domain or they may just do it the wrong, but all things being equal, I think I would take my chances early on as it pays to be an early adopter when it comes to finite resources. Of course some domain names even in the geoTld's will NOT be cheap and the HVO's will still win but the difference between being a competing player or a dominated player in the search positioning wars will pretty much depend on where you sit in the search rankings.

 

You may not be www.condomminium.la but www.condolist.la small either.  And like everything internet, search engines might at the end of the day determine who gets to rank high when a certain term is searched. You may not be number 1, but number  4 or even 6 isn't a dominated strategy. I call that an equilibrium or compete position.